Appeal No. 2003-0067
Application No. 09/713,480
“a plug” of the type disclosed by Smith, would inherently be capable of maintaining an orientation
in still water with the shank vertically oriented.
We also observe that the limitation appearing in each of the independent claims that the
hook is caused to orient with “said shank vertically oriented” was added by amendment to the
claims. While the specification indicates that the fish hook assumes and maintains “an inverted
position” in the water (see, for example, page 1 lines 15-18), it does not state that the shank is
maintained with “said shank vertically oriented” as now claimed. The examiner should determine
whether the combination of appellant’s specification and informal drawings reasonably conveys to
the ordinarily skilled artisan that the inventor had possession at the time the application was filed of
the presently claimed subject matter. That is, the examiner should determine whether there is
descriptive support within the meaning of 35 U.S.C. § 112, first paragraph, for the “said shank
vertically oriented” limitation now appearing in each of appellant’s independent claims.2
2With respect to the description requirement found in the first paragraph of 35 U.S.C.
§ 112,
[t]he test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to
the artisan that the inventor had possession at that time of the later claimed subject
matter, rather than the presence or absence of literal support in the specification
for the claim language. The content of the drawings may also be considered in
determining compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983) (citations omitted).
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